bclt 9 27 11 Priority 102g by HC121004153126

VIEWS: 6 PAGES: 63

									Old Fashioned Priority – 102(g)

   Patent Law – Prof Merges

           9.27.2011
      Agenda: § 102(g)

• Overview section 102(g)
• Brown v. Barbacid
• Peeler v. Miller
• Dow v. Astro-Valcour
    35 USC § 102(g)(1) and (2)
(g)(1) Inventor establishes [prior
  invention] and not abandoned,
  suppressed or concealed . . .”

(g)(2) Invention was made in this
  country by another inventor who
  had not abandoned, suppressed or
  concealed it.”
    35 USC § 102(g)(1) and (2)

• Interferences – (g)(1)

• Anticipation – (g)(2)

• Common priority rule – stated in
  (g)(2)
           35 USC 102(g)(1)
during the course of an interference
 conducted under section 135 or section
 291, another inventor involved therein
 establishes, to the extent permitted in
 section 104, that before such person's
 invention thereof the invention was
 made by such other inventor and not
 abandoned, suppressed, or concealed,
                  102(g)(2)
(2) before such person's invention thereof, the
  invention was made in this country by
  another inventor who had not abandoned,
  suppressed, or concealed it. In determining
  priority of invention under this subsection,
  there shall be considered not only the
  respective dates of conception and reduction
  to practice of the invention, but also the
  reasonable diligence of one who was first to
  conceive and last to reduce to practice, from
  a time prior to conception by the other.
   102(g)(2): Common Priority Rule for
                 102(g)
(2) In determining priority of invention
 under this subsection, there shall be
 considered not only the respective
 dates of conception and reduction to
 practice of the invention, but also the
 reasonable diligence of one who was
 first to conceive and last to reduce to
 practice, from a time prior to
 conception by the other.
         Brown v. Barbacid
• Interference: Priority Contest

• This case: issued patent (Barbacid)
  v. pending application (Brown et al.)
              35 USC §135
(a) Whenever an application is made for a
  patent which, in the opinion of the
  Director, would interfere with any pending
  application, or with any unexpired patent,
  an interference may be declared …The
  Board of Patent Appeals and Interferences
  shall determine questions of priority of the
  inventions and may determine questions of
  patentability. . . .
        Section 135(b) Time Limits
(1) A claim which is the same as, or for the same or
  substantially the same subject matter as, a claim of
  an issued patent may not be made in any
  application unless such a claim is made prior to
  one year from the date on which the patent was
  granted.
(2) [Published apps: claim] may be made in an
  application filed after the application is published
  only if the claim is made before 1 year after the
  date on which the application is published.
 35 U.S.C. 291 Interfering patents.

The owner of an interfering patent may
 have relief against the owner of another
 by civil action, and the court may
 adjudge the question of validity of any
 of the interfering patents, in whole or in
 part. The provisions of the second
 paragraph of section 146 of this title
 shall apply to actions brought under this
 section.
     35 USC § 102(g)(1) and (2)
• Interferences – (g)(1)

• Anticipation – (g)(2)

• Common priority rule – stated in (g)(2)
          35 USC 102(g)(1)
during the course of an interference
 conducted under section 135 or section
 291, another inventor involved therein
 establishes, to the extent permitted in
 section 104, that before such person's
 invention thereof the invention was
 made by such other inventor and not
 abandoned, suppressed, or concealed,
          35 USC 102(g)(1)
during the course of an interference
 conducted under section 135 or section
 291, another inventor involved therein
 establishes, to the extent permitted
 in section 104, that before such
 person's invention thereof the invention
 was made by such other inventor and
 not abandoned, suppressed, or
 concealed,
        Invention: Milestone
           Events/Dates

Conception R to P   Filing   Issuance
      Some basic nomenclature

• “Senior party” = first to file

• “Count” = (roughly) claim

• Board of appeals and interferences = PTO
  administrative court (see chap. 1)
   What happened at the Board in
        Brown v Barbacid?
• Brown was the senior party; priority awarded to
  Barbacid


  –Barbacid reduced to practice on March 6,
   1990

  –PREDATED Brown’s filing date of April 18,
   1990
                Board Decision
 Brown
 Filed:
 4/18/1990


R to P:
             Filed:      Issued:
3/6/1990
             5/8/1990    2/9/1993


Barbacid
Brown – argument on appeal
R to P:      Filing:
9/1989 - ?   4/18/1990



         R to P:         Filing:
         3/6/1990        5/8/1990


 Barbacid
Michael Brown   Joseph Goldstein
The Barbacid patent application was filed
 on May 8, 1990, and issued on February
 9, 1993. The Brown application was filed
 on December 22, 1992, but was
 accorded the benefit of an earlier
 related application filed on April 18,
 1990. Thus, Brown was the senior party.
 Barbacid, as the junior party, had the
 burden to prove priority by a
 preponderance of the evidence. – p 442
          Patent Cover Page

Filed: January 1, 1998.

Related U.S. Application Data:

This application is a continuation of U.S.
 Application 96/10245 filed February 5,
 1997, which is now abandoned.
  Farnesyl
Transferase
Ras Protein
Authentication and corroboration
  issue: Dr Reiss testimony for
             Brown
• Sept 20 v Sept 25 data

• Corroboration rule: why?

• Standard for corroboration: “rule of
  reason”/all evidence
Autoradiographs
Alexander Graham Bell – Lab Notebook
      Conception of the “count”

• Definition of conception

• All limitations (elements) of count?

• Sept 25 v Sept 20 . . .
      Markman v. Lehman, 987 F.Supp. 25 (DDC
                     1997)
-- affirmed 178 F.3d 1306 (Fed. Cir. 1998)

“To establish an actual reduction to practice, an inventor
  must provide independent corroborating evidence in
  addition to his or her own statements and documents,
  such as testimony of a witness other than the inventor or
  evidence of surrounding facts and circumstances
  independent of information received from the inventor.
  The purpose of this rule is to prevent fraud.” – at 30
    Gordon Gould, Laser Inventor
Gould: I used a Fabry-Perot resonator and became
  familiar with the tools of optical spectroscopy. Years
  later I went to Columbia, which was big on
  microwave spectroscopy. To think of the Fabry-
  Perot as a resonator for a laser oscillator I had to
  have both those kinds of experience. It just clicked
  that one exciting night, about one in the morning ,
  and I jumped up and started writing , and wrote
  that whole first notebook in one weekend . Then I
  had it notarized on Monday.
                Peeler v Miller
3.14.1966
                Peeler et al. rely only
  Miller           on Filing Date:
Conception
                      1.4.1968



     March,                         4.27.1970
     1966:
     Miller R                       Miller Filing
     to P                              Date
Peeler et al.
(Chevron
Researchers)
Related Patent:
3,583,920 (1971)
§ 102(g) “Abandoned, Suppressed,
          or Concealed”

                     Filing
 R to P              Date
                Peeler points
• “Counts” are basically claims
  – Special interference lingo


• “Abandoned experiment” argument –
  basically, an enablement issue
          Peeler points cont’d
• P 458: “Which of the rival inventors has the
  greater right to a patent?”
  – Classic Judge Rich approach to invention priority
    issue
  – See also Paulik, p. 461

• “In our opinion, a four year delay from [R to
  P] to [filing] is prima facie unreasonably long
  . . .”
    Compare to Diligence -- §102(g)(2)
(2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it. In determining priority of
 invention under this subsection, there shall
 be considered not only the respective dates
 of conception and reduction to practice of
 the invention, but also the reasonable
 diligence of one who was first to conceive
 and last to reduce to practice, from a time
 prior to conception by the other.
§ 102(g) “Abandoned, Suppressed,
          or Concealed”

                     Filing
 R to P              Date
    Compare to Diligence -- §102(g)(2)
A
                  Reduction to
     Conception   practice



B
Conception                       R to P

        ONLY B’s diligence
        matters
• The party alleging suppression or
  concealment has the burden of proof.
  Young, 489 F.2d at 1279, 180 USPQ at
  390 See also 37 CFR § 1.632, which
  requires a party to give notice that it
  intends to argue that its opponent
  suppressed or concealed, thereby
  giving the opponent an opportunity to
  present evidence to negate any
  inference of intent to suppress or
  conceal.
• A 17 month delay was found not
  to be unreasonable in Fujikawa
  v. Wattanasin, 93 F.3d 1559, 39
  USPQ2d 1895 (Fed Cir 1996)

 –See specific facts!
• A 22 month delay was
  found to be unreasonable
  by the board in Smith v.
  Crivello, Smith v. Crivello ,
  215 USPQ 446 (BPAI 1982)
                     More Cases!
•   (1) Palmer v. Dudzik , 481 F.2d 1377, 178 USPQ 608
•    (2) Young v. Dworkin , 489 F.2d 1277, 180 USPQ 388
•    (3) Peeler v. Miller , 535 F.2d 647, 190 USPQ 117
•    (4) Horwath v. Lee , 564 F.2d 948, 195 USPQ 701
•    (5) Shindelar v. Holdeman , 628 F.2d 1337, 207 USPQ 112
•    (6) Smith v. Crivello , 215 USPQ 446
•    (7) Correge v. Murphy , 705 F.2d 1326, 217 USPQ 753
•    (8) Paulik v. Rizkalla , 760 F.2d 1270, 226 USPQ 224
•    (9) Holmwood v. Cherpeck , 2 USPQ2d 1942
•    (10) Lutzker v. Plet , 843 F.2d 1364, 6 USPQ2d 1370
•    (11) Fujikawa v. Wattanasin , 93 F.3d 1559, 39 USPQ2d
    1895
                   35 USC 104
• Proof of inventive acts: Domestic US Activity
  Originally Favored (pre-1996)
  –Originally, US-only (“home court
   advantage” in interferences)
  –Then, NAFTA members only
  –Finally, 1996, all World Trade Organization
   Members
    • Truly international interferences today
            Current 37 CFR 1.131
Prior invention may not be established under this
  section in any country other than the United
  States, a NAFTA country, or a WTO member
  country. Prior invention may not be established
  under this section before December 8, 1993, in a
  NAFTA country other than the United States, or
  before January 1, 1996, in a WTO member
  country other than a NAFTA country.
    Interferences – some fine points

• Administrative §135 : USPTO Bd Pat Int &
  App.; appeal to Fed Cir under §134, 141

• OR district court, District of Columbia appeal
  under §§ 145/146
 From Interferences (102(g)(1)) to
novelty/prior invention of another
            (102(g)(2)

• In Brown v. Barbacid and Peeler v. Miller,
  TWO INVENTORS FOUGHT FOR A PATENT

  – Priority Fight


• What if prior invention is used ONLY as a
  piece of prior art AGAINST a patent?
         Dow v Astro-Valcour
Dow Chemical Co. v. Astro-Valcour, Inc., 267
 F.3d 1334 (Fed. Cir. 2001)

Good example of “prior art” use of section
 102(g)
Current owner of AVI
              Dow: Key Facts
• Why no interference?

• Dow’s inventive “milestones”

• AVI’s evidence of its employees’ activities
• Why no interference?


“It never occurred to us . . .”
 to file our own patent
 application – Astro-Valcour
  Miyamoto patent license
       Why not a 102(a) case?
• Miyamoto ‘300 (1968) patent: broad genus –
  “Non-CFC blowing agents”

• Dow patents
  – Species claims
  – Isobutane
  – NB: Miyamoto patent cited in ‘933 patent
    reexam
 Park - Dow
       C: late
                    R to P:
       August,
                    9/13/1984
       1984


 March 3, 1984: R
 to P (C?)

AVI Employees
    Abandonment, Suppression,
          Concealment

• To rebut charge of abandonment, the fastest
  route to commercialization was not required,
  only reasonable efforts.

• Not abandoned here, even though there was
  2.5 year delay between invention and
  commercialization
            See also . . .


• Flex-Rest, LLC v. Steelcase, Inc.,
  455 F.3d 1351, 1359 (Fed. Cir.
  2006)

• 6 ½ month delay not
  abandonment under Dow
           Doctrinal Wrinkles
• “Third party” versus “second party” issues

• Corroboration

• “Appreciation” issues
                102(g)(2)
(2) before such person's invention
  thereof, the invention was made in this
  country by another inventor who had
  not abandoned, suppressed, or
  concealed it.
              Abandonment?

• Interference vs. 102(g)(2) prior art situations

  – Commercialization vs. filing application


• Compare Peeler: convinced?
Thomson S.A. v. Quixote Corp., 166 F.3d 1172,
 49 U.S.P.Q.2d (BNA) 1530 (Fed. Cir. 1999),
 cert. denied, 119 S. Ct. 2395 (1999):
 uncorroborated oral testimony by non-
 interested individuals may be sufficient to
 satisfy the clear and convincing standard of
 proof for invalidity based on anticipation
 under § 102(g).

								
To top